In one of the most interesting WIPO decisions of the year, A one person WIPO Panel today denied the complaint of 1stQuote.com against the owner of FirstQuote.com.
What makes this case particularly interesting is that the trademark holder of 1stQuote.com already won WIPO Cases against the holders of the domains FirstQuote.net and FirstQuote.org in two separate filed WIPO actions.
Even more interesting is that this panel ruling in favor of the domain holder might have turned on the fact that the registrant of the domain was located offshore.
Here are the facts:
“”The Complainant was established in 1997 and sells its products and services through a group of more than 7,500 independent insurance agencies located in 31 states and has more than 575 employees in four regional offices, serving nearly 100,000 business customers around the U.S. Since January 2003, the Complainant is using 1STQUOTE to promote its workers’ compensation insurance products, including its on-line application processing software.””
“”The Complainant is registered owner of the US trademark No. 3,302,240 1STQUOTE for “providing on-line non-downloadable work flow computer software for use in database management and administration in the field of insurance information”, registered on October 2, 2007 and claiming first use of January 1, 2003″”
“”The Respondent acquired the disputed domain name on February 24, 2010 from an aftermarket service for the amount of $4,074 and is using it in connection with a parking website providing inter alia links to websites of the Complainant’s direct competitors.””
“”The Respondent alleged that the phrase “First Quote” is the featured tagline for thousands of insurance, financial and legal websites and can be heard in numerous ads from agencies asking to “come in today for your first quote”.
“The Respondent further argued that the disputed domain name is comprised of a generic term, which may be used in hundreds of ways, and the Complainant is attempting to leverage the domain name from its owner by using the UDRP forum to reverse hijack the domain.””
“”The Respondent further states that there are 10 active trademarks for FIRST QUOTE in the US, that there is no proof that the Complainant is the sole owner of and creator of the phrase “first quote” and that the disputed domain name was first registered on January 15, 1997, 6 years prior to the Complainant’s claim of “first use” of the 1STQUOTE-trademarks and even before the Complainant was established, which also shows that the phrase had already been popular before complainant tried to claim it.””
“”The panel found that the disputed domain name is confusingly similar to the Complainant’s 1STQUOTE-Marks.””
However the panel went on to find there was no bad faith despite being parked and being confusingly similar to the Complainant’s 1STQUOTE-Marks:
“”It seems to be more likely than not to this Panel that the Respondent acquired the disputed domain name – as he contends – because of its meaning and because of the substantial third party use of the underlying words, and not with a view to the Complainant and its 1STQUOTE-Marks.””
“”The Complainant’s 1STQUOTE-Marks are not used identically in the disputed domain name but with a different spelling, and they enjoy less than average distinction, if any distinction at all, as they are made up of two generic words which are commonly used together.””
“”Moreover, the Respondent is based in Hong Kong, SAR of China, while protection of the Complainant’s 1STQUOTE-Marks and the Complainant’s business are limited to the United States of America. “”
“”As a result, on the balance of evidence, the Complainant has failed in this Panel’s assessment to prove that the disputed domain name was registered in bad faith, i.e. with the Complainant in mind.””
“”In this Panel’s assessment, the present case needs to be distinguished from previous – though not binding – cases decided under the UDRP, such as Aspen Holdings Inc. v. Christian P. Vandendorpe, WIPO Case No. D2009-1160, <firstquote.net>, and Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776, <firstquote.org>.””
“”Aspen Holdings Inc. v. Christian P. Vandendorpe, WIPO Case No. D2009-1160, <firstquote.net>, dealt with an identical second level domain name and the same Complainant, and resulted in the transfer of the domain name <firstquote.net>. With regard to the decisive question whether or not <firstquote.net> was registered and had been used in bad faith, it was found in that case that, while the word “quote” was frequently used in connection with financial products, the phrase “first quote” called for some explanation.””
“”As <firstquote.net> was registered only 5 days after the Complainant had first started using the term 1STQUOTE in commerce, as the respondent in such case had been involved in an earlier UDRP proceeding, and as he had not replied to the Complainant’s contentions, the panel in that case decided that these “factors when combined together are sufficient to tip the scales in the Complainant’s favour on the balance of probabilities.” In the absence of such factors in the present case, however, and in this Panel’s assessment in weighing the Complainant’s case against the Respondent’s reply, the Panel does not find that the Complainant has succeeded here in proving it is more likely than not that the disputed domain name was registered in bad faith.”””
“”Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776, <firstquote.org>, also dealt with an identical second level domain name and the same Complainant, and resulted in the transfer of the domain name. From the point of view of this Panel, however, the present Respondent (other than the respondent in such case) gave well-founded reasons why he was unaware of any known corporations operating under the brand name “first quote” when acquiring the disputed domain name, and, moreover, brought evidence to the Panel’s attention that numerous insurance companies are advertising under the term “first quote”.””
“”To sum up, other than in the above-cited <firstquote> cases, compelling facts and circumstances on the record of this case do not suggest that the disputed domain name was registered in bad faith. Accordingly, the transfer of the disputed domain name is denied.””
A very interesting opinion by Brigitte Joppich who was the sole panelist.
I especially noted and placed in bold above the statement that weakened the protection of the trademark because the registrant was Hong Kong based rather than US based.
We have talked in the past about the benefits of being offshore.
This case might very well have turned on the fact that the registrant was offshore, especially in light of the two previous cases for the exact domain involving the .net and .org wound up with a victory for the trademark holder.
The more important aspect appeared to be that the domain name was registered “6 years prior to the Complainant’s claim of “first use” of the 1STQUOTE-trademarks and even before the Complainant was established” — thus, it would have been impossible to have been registered in bad faith. Being in the other jurisdiction likely helped seal the argument, though, for the respondent.
George
But the domain was just acquired by the holder on February 24, 2010.
How many decisions do we see the panel saying the transfers start the period a new, especially in a aftermarket situation where there was probably not a contract between the original holder and the new holder.
The trademark was registered years before this domain holder acquired the domain
Good point, Mike. I didn’t notice that when I first read the case. Thanks.
The case didn’t turn on him being offshore.
It turned on him making a competent explanation of how the term at issue was not distinctive.
Whether something is, or is not, a trademark is one thing, but it is not the end of the story. Some marks are stronger than others, for a variety of reasons.
When the mark at issue is not strong, then what may be minor additional factors, such as the geographic likelihood of intent, become relatively more important.
But the panelist explained perfectly well what distinguished this case from the other two – mainly that she believed the respondent did a good job explaining how the term is commonly used. When a panelist is going to take a different position from a prior case, they will look for as many “different facts” as they can. It appears in this instance the panelist was simply persuaded to agree with the fact it was a common term apart from the mark, unlike the panelist in the .net case.
I believe John is correct in his assesment. I think the fact that he was in Hong Kong just helped to bolster his case that he had a less likely reason to be aware of the TM (Because they only have a US TM) combined with his evidence that “First Quote” was commonly used in insurance marketing.
Two things this does show is that 1) Having been involved in UDRP cases before IS a mark against you and 2) Not Responding seriously hurts you as well. Neither of those things are supposed to be negatives against domain holders…in theory any way.
trademark rights are acquired by use and strenghtened by registration. you register a mark and do not use it you loose the rights to the mark.thus first use in commerce establishes priority.this domain firstquote is generic and registered 6 yrs prior to to any yeahoo registering any junior mark.
2.complainants mark is 1stquote which is different if this case went to court complainant would have to produce surveys to even validate their use 6 yrs later.the mark would move along the scale of descriptive,suggestive,generic etc.
3. there is a big world out there over 200 countries and any domainer that lives in another country does not have to take the time to review the uspto registry. this registry is prima facie notice for marks inside the us only…there are 6 billion people who live in this world.
4.in addition respondant could cause complainant a lot of grief challenging their mark with a notice of cancellation,a negative brand site targeting complainant ie homedepotsucks.com,running up complainants legal fees,and send this complainant to school.
5. these complainants are going to fly right a trademark has little value and could be a huge liability..a sharp domainer could level a billion dollar corportion and an army of ip attorneys.especially when an arrogant complainant comes after a lonely domainer who is on the ball and looks they are asleep at the wheel…..and just watch the ip lawyer attempt to justify their 300 an hour fee to the complainant….
Challenging a TM of a large company is easier said than done.
At some point, reality steps in and standing on principle leaves the room.
Does it make sense to spend $ 100K in legal fees to protect a $ 5K domain? That is when the domain owner’s lawyer ‘casually’ mentions to the corporate lawyer – “does your client want to buy the domain?”
Domain guy
Funny I can’t you how many opinions I have read that have held US domineers responsible for knowing trademarks in countries all over the world
J.B:
Thanks for giving us your insight.
Domo
Ditto John Berryhill & Chip Meade: if the respondent didn’t respond, likely he would have lost! “First quote” really is a generic term. Like Amazon is the business name of lots of companies not involved in books, but IBM or Google is more unique. That’s why people registering BP domains, like Rick Schwartz, it’s a little grey area, because British Petroleum really is generic, besides being the trademark of British Petroleum – what do you say?
^^^ You have no clue as to what terms can constitute a valid TM
Trademark law distinguishes four gradations of distinctiveness of marks, in
descending order of strength:
-fanciful or arbitrary eg Kodak
-suggestive
-descriptive (eg. “Vision Center” for eyeglasses store)
-generic (eg. “Ivory” for soap. Generic name will be protected if it acquires secondary meaning)
“To sum up, other than in the above-cited cases, compelling facts and circumstances on the record of this case do not suggest that the disputed domain name was registered in bad faith. Accordingly, the transfer of the disputed domain name is denied.”
The above quote is the crux of the decision. Weak mark, valid explanation regarding registration and use and no presumption of prior knowledge due to location of the respondent. If the respondent had defaulted complainant would have won. If the respondent had been from the US it would have been a very close call and I can think of 20 or so other panelists who would have granted the complaint. Respondent took a risk with a single panel.
@ Aggro, thanx for input. Here are sample td’s based on your description – what do you say?
-fanciful or arbitrary – Flikr
-suggestive – Internatational Business Machines (IBM)
-descriptive – Internatational Business Machines (IBM) ?
-generic – Go Daddy is generic. Anything to do with domains can’t use the name, “Go Daddy. ” Or Amazon. Anything to do with books can’t use, “Amazon” – are those good examples?
Is IBM suggestive or descriptive?
Godaddy.com falls into the first category as well, it is certain not generic.
domains.com or domainnames.com would be example of generic names in the domain space
This is a great case, and GREAT domain I may add. I wonder how much it sold on the aftermarket. To me appears like at least a $25k domain, and they didn’t request a 3-member panel. That is risky.
But overall I do not think being offshore was the main issue. I think the panelist truly felt that it was a completive term in a very competitive industry where lots of insurance companies would love to get their hands on a domain like this. And we are all familiar how thousands of websites use the phrase “first quote” to get you to sign up. So… IMO that was the deciding factor.
Daryl
The decision and my post contained the price the domain was purchased for:
“”The Respondent acquired the disputed domain name on February 24, 2010 from an aftermarket service for the amount of $4,074″
I found this to be very helpful ( posted a while back a a sticky @ domainstate by Domain Guru “Safesys”)
ca11.uscourts.gov/opinions/ops/200613174.pdf
Trademark law distinguishes four gradations of distinctiveness of marks, in
descending order of strength: fanciful or arbitrary, suggestive, descriptive, and
generic.
An arbitrary or fanciful mark bears no logical relationship to the product
or service it is used to represent. Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178,
1184 (5th Cir. 1980) (giving example of “Kodak”).
A suggestive mark refers to
some characteristic of the goods, but requires a leap of the imagination to get from
the mark to the product. Id. (giving example of “Penguin” for refrigerators).
A descriptive mark identifies a characteristic or quality of the service or product. Id.
at 1183-84 (giving example of “Vision Center” for eyeglasses store).
There are several different approaches to defining “generic.” By one test, a
generic name refers to “a particular genus or class of which an individual article or
service is but a member.” Soweco, 617 F.2d at 1183 (internal quotation marks
omitted). By another measure, a generic name is the term by which the product or
service itself is commonly known. See Nat’l Conference of Bar Exam’rs v.
Multistate Legal Studies, 692 F.2d 478, 487 (7th Cir. 1982). Still other courts say
a generic name depicts the product or service as a whole, rather than any particular
feature, quality, or characteristic of the whole. Blinded Veterans Ass’n v. Blinded
Am. Veterans Found., 872 F.2d 1035, 1039 (D.C. Cir. 1989) (citing Zatarains, Inc.
v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790 (5th Cir. 1983)). Genericness
lies not in the term itself, but in the use of the term: “A word may be generic of
some things and not of others: ‘ivory’ is generic of elephant tusks but arbitrary as
applied to soap.” Soweco, 617 F.2d at 1183.
A generic use of a word may not be registered as a trademark. Park ‘N Fly,
Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985). A descriptive name, on
the other hand, though not inherently distinctive, can acquire distinctiveness or
“secondary meaning” by becoming associated with the proprietor’s product or
service. Am. Television & Communications Corp. v. Am. Communications &
Television, Inc., 810 F.2d 1546, 1548-49 (11th Cir. 1987). A name has acquired
secondary meaning when “the primary significance of the term in the minds of the
[consuming] public is not the product but the producer.” Id. at 1549 (quoting
Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 118 (5th Cir. 1979) (quoting Kellogg
Co. v. Nat’l Biscuit Co., 305 U.S. 111, 118 (1938))). A proprietor can make a
prima facie showing of “secondary meaning” by showing that the name has been
used in connection with the proprietor’s goods or service continuously and
substantially exclusively for five years. 15 U.S.C. § 1052(f). Whether a name has
attained secondary meaning depends on the length and nature of the name’s use,
the nature and extent of advertising and promotion of the name, the efforts of the
proprietor to promote a conscious connection between the name and the business,
and the degree of actual recognition by the public that the name designates the
proprietor’s product or service. Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513
(11th Cir. 1984).
Courts have generally held that a term used generically cannot be
appropriated from the public domain; therefore, even if the name becomes in some
degree associated with the source, a generic mark cannot achieve true secondary
meaning. See Soweco, 617 F.2d at 1185 n.20 (secondary meaning not relevant to
generic mark); Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 115 & n. 11 (5th Cir.
1979) (“Most courts hold that a generic term is incapable of achieving trade name
protection”; courts refuse to allow proof of secondary meaning to elevate generic
term to trademark status); see also Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d
971, 974 (8th Cir. 2006); Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d
786, 790-91 (5th Cir. 1983); Nat’l Conference of Bar Exam’rs, 692 F.2d at 487; 2
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 15:24
(4th ed. 2007). But see Am. Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494
F.2d 3, 11 (5th Cir. 1974) (generic name will be protected if it acquires secondary
meaning).
additionally:
but by definition a trademark has to be distinctive in its class to be capable of being registered.
FYI they filled IN REM in Virginia
http://dockets.justia.com/docket/virginia/vaedce/1:2010cv01349/260477/
Yet another idiots who want to burn hundreds of thousands instead of simply buy the domain for 1/10th of that amount